Industrial Property Law

Originally originating from French law, the saisie-contrefaçon procedure was harmonized at European level by Directive No 2004/48 of April 29, 2004 (Art. 7) and incorporated by the Law of 29 October 2007 into Article L. 716-4-7, paragraph 2, of the Intellectual Property Code. This article provides that any person with standing to sue for infringement may have enforcement proceedings carried out by …

Seizure for infringement

Originally originating from French law, the saisie-contrefaçon procedure was harmonized at European level by Directive No 2004/48 of April 29, 2004 (Art. 7) and incorporated by the Law of 29 October 2007 into Article L. 716-4-7, paragraph 2, of the Intellectual Property Code. This article provides that any person with standing to sue for infringement may have enforcement proceedings carried out by a bailiff, by virtue of an order on ex parte application  i.e. without notice (ordonnance sur requête) by the civil court. The bailiff may be assisted by experts appointed by the plaintiff, who must be independent, failing which the seizure will be null and void . The assistant of the bailiff who comes from an independent consultancy firm may be appointed as an expert witness even if he or she was involved in the applicant's trademark application and was paid for his or her assistance in a saisie-contrefaçon raid .

The seizure may consist of a detailed description, with or without the taking of samples, or an actual confiscation of the allegedly infringing products or services, as well as any document relating to them. The latter may be confiscated even in the absence of the infringing goods or services (art. L. 716-4-7, para. 2, IP Code). The court may also order the detailed description or actual seizure of the equipment and instruments used to manufacture or distribute the allegedly infringing products or services ( Art. L. 716-4-7, para. 3, IP Code).

1) Application for seizure of infringing goods (requête en saisie-contrefaçon)

The application for a saisie-contrefaçon must be presented by the applicant to the competent civil court. When the application is presented in the context of a reference on the merits, the provisions of Article 845, paragraph 3, of the Code of Civil Procedure apply, to the exclusion of those of Article L. 716-4-7 of the Intellectual Property Code . In this case, the authority to hear the case lies with the president of the chamber to which the case has been referred or to which it has been allocated or with the court already seized. It must be submitted in duplicate and must state reasons (Article 494, para. 1, Code of Civil Procedure). It may authorize the bailiff to proceed under the terms of Article R. 716-16, paragraph 2, of the Intellectual Property Code, to make any relevant findings in order to establish the origin, the substance and the extent of the infringement .

If the competent court does not grant the application, the applicant may appeal, unless the order is issued by the first president of the Court of Appeal. The deadline for appeal is fifteen days. The appeal is filed, investigated and adjudicated in the same way as in non-contentious matters ( Art. 496, para. 1, Code of Civil Procedure). If granted, any interested party may refer the matter to the court that issued the order, via the procedure of summary judgment to set-aside an ex parte judgment (référé-rétractation) under Article 496(2) of the Code of Civil Procedure.

The applicant is subject to a duty of loyalty requiring the latter to provide the court with all relevant information to enable it to understand the issues at stake in the proceedings for which authorization to carry out a seizure for infringement is requested and to make an informed assessment of its legitimate interest in resorting to such a measure . The duty of loyalty is breached when the applicant fails to provide information on trademark opposition proceedings involving the same marks as those at issue in the infringement proceedings, where it has been decided that the contested mark does not constitute an imitation of the opposing marks and does not create a likelihood of confusion . The breach of the duty of loyalty leads to the invalidity of the saisie-contrefaçon, when the order on ex parte (without notice) application authorizing the execution of the seizure is obtained under unfair conditions , and constitutes a fault within the meaning of Article 1240 of the Civil Code, incurring the tort liability of the person responsible .

The saisie-contrefaçon is ordered by the president of the judicial court with jurisdiction to hear the merits of the case (Article R. 716-16 IP Code). During the appeal procedure, only the first president of the Court of Appeal is competent to order measures for seizure of evidence on application . The president of the court may also order, in the light of the record of the seizure, any measure to supplement the evidence of the alleged acts of infringement (Art. R. 716-19, para. 1, IP Code).

The order on ex parte application constitutes a provisional judgment, rendered in the absence of adversarial proceedings in cases where the applicant is entitled not to call the opposing party ( Art. 493 of the Code of Civil Procedure). Saisie-contrefaçon measures fall in this category. Directive No 2004/48 also specifies that the measure may be taken without the other party being heard, in particular when any delay in its issue is likely to cause irreparable harm to the rightholder or when there is a demonstrable risk of evidence being destroyed (Article 7 Directive No 2004/48). The effect of surprise prevents the potential destruction of evidence. The order must be substantiated ( Art. 495, para. 1, of the Code of Civil Procedure) and include all the information required by Art. 454 et seq. of the Code of Civil Procedure. It is enforceable only upon presentation of the original document, i.e., upon simple presentation to the defendant, without the need for service of the order (Article 495, paragraph 2, Code of Civil Procedure).

The court may also make the execution of the measures it orders contingent on the provision by the applicant of guarantees intended to ensure the possible indemnification of the respondent if the infringement action is subsequently ruled unfounded or the seizure is annulled (Art. L. 716-4-7, paragraph 4, IP Code). Those guarantees must be established before the operation is conducted (Art. R. 716-17, para. 1, IP Code).

Finally, the court may amend or revoke the order, including when the trial court is already seized of the case (Art. 497 of the Code of Civil Procedure).

The bailiff must respect the ambit of the order for seizure of evidence . He/she cannot extend searches and findings to trademarks other than those referred to in the order , nor can he/she obtain documents if the seizure is only authorized based on the description and copying of documents .

The actual seizure is not limited solely to the proof of the actual infringement, but also includes the search for and potential seizure of evidence to determine the extent of the infringement and the damage .

Before proceeding with the execution of the saisie-contrefaçon, the bailiff must give a copy of the order and, if applicable, of the document establishing the provision of guarantees, to the persons holding the objects seized or described . If this is not done, the operation may be cancelled and damages claimed from the bailiff (Article R. 716-17, paragraph 2, IP Code). However, in the case of the substitution of goods or services, the bailiff is only required to give copies of these documents after the goods have been delivered or the services provided (Art. R. 716-17, paragraph 3, IP Code). After the seizure, the bailiff must give those same individuals a copy of the report (Art. R. 716-17, para. 2, IP Code).

The failure to indicate the date on the report of the seizure constitutes a formal irregularity that may lead to the annulment of the report under Articles 112 et seq. of the Code of Civil Procedure, unless it is established that the person contesting the seizure could not have been unaware of the date of the seizure operations . However, in the case of a purchase report (constat d'achat), the absence of sufficient guarantees of independence of the third-party purchaser in relation to the applicant is not such as to render the confirmation of purchase invalid, since it is for the court to assess whether, in the light of all the evidence before it, that lack of independence affects the probative value of the confirmation .

The applicant must file a civil or criminal action on the merits of the case within twenty working days or thirty-one calendar days, whichever is longer, from the day the seizure was executed (Article R. 716-18 IP Code). Failing this, the entire seizure, including the description , may be annulled at the request of the person seized, without the latter having to give reasons for his request and without prejudice to the damages that may be claimed (Art. L. 716-4-7, para. 5, IP Code).

The party subject to the seizure may request that the conditions or consequences of the seizure be specified in accordance with Article R. 716-19 of the Intellectual Property Code and only under the conditions set out in that provision .

Experts must be independent by virtue of the right to a fair hearing as enshrined in Article 6(1) of the Convention for the Protection of Human Rights and Fundamental Freedoms (ECHR).

CA Rennes, 25 May 2004, LawLex200400003493JBJ.

Cass. com, 19 December 2006, LawLex2022000037JBJ: in this case, the order authorized the bailiff to proceed, if necessary, by copying, photocopying, photographing or any other means of reproduction of all technical and commercial documents, writings or drawings relating to the nature, origin, purpose extent of the trademark infringement, but did not include an authorization to have documents removed.

CA Paris, 29 June 2021, LawLex202200003520JBJ.

For an illustration, See Cass. 1reciv., 31 October 2012, LawLex202200000881JBJ, rendered in the matter of copyright.

CA Paris, 3 December 2008, LawLex2010000408JBJ: regarding a contesting party who was the person who sent the documents to the bailiff by fax, and whose representative was present during the operations.

Cass. mixte, 12 May 2025, LawLex202500003859JBJ, which held that there was no reason to annul the purchase report on the sole ground of the lack of independence of the third-party purchaser - an intern at the plaintiff's law firm - given that, in view of the limited role of the third-party purchaser and the fact that he acted at all times under the supervision of the judicial commissioner, the lack of independence of said third party did not affect the objective nature of the findings stated in the report.

Cass. com. 7 June 2011, LawLex201100001030JBJ.

Cass. com, 1 March 2017, LawLex202200003952JBJ.

Cass. com., 26 March 2008, LawLex202200000752JBJ, which granted the judgment of the Court of Appeal to revoke the order on ex parte application issued by the President of the Tribunal de grande instance (now the Tribunal judiciaire - judicial court)

Article 7 of Directive No 2004/48/EC on the enforcement of intellectual property rights requires the applicant to provide the court with any reasonably available evidence to support its allegations that its intellectual property right has been infringed or that such infringement is imminent. However, this requirement has not been included in French law, as the Member States may choose to maintain the national procedure if it is more favorable for rightholders (Article 2 of Directive No 2004/48).

CA Paris, 26 November 2021, LawLex202200003519JBJ.

Cass. com, 26 March 2008, LawLex202200000752JBJ.

Cass. com. 14 September 2010, LawLex202200000756JBJ.

Cass. com, 3 July 2019, LawLex202200003605JBJ.

Industrial Property Law

152. Seizure for infringement

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152. Seizure for infringement

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Les décisions de justice citées dans ce paragraphe :

Les notions juridiques connexes

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